Tricots Canada U.S. Inc.

Trademark Trial and Appeal Board

Jun 19, 1998

EX (T.T.A.B. Jun. 19, 1998)

Paper No.
ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 19, 1998
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Tricots Canada U.S. Inc.
________
Serial No. 75/094,455
Serial No. 75/094,456
_______
Stewart L. Gitler of Hoffman, Wasson & Gitler for Tricots
Canada U.S. Inc.
Katherine Stoides, Trademark Examining Attorney, Law Office
109 (Deborah S. Cohn, Managing Attorney)
_______
Before Simms, Seeherman and Hairston, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Tricots Canada U.S. Inc. has applied to register
BLIZZARD and design1 and BLIZZARD FLEECE and design,2 with
the word “Fleece” disclaimed, for “textile fabrics for use
in manufacture of clothing.” The marks are depicted below.

1 Application Serial No. 75/094,456, filed April 26, 1996, based
on an asserted bona fide intention to use the mark in commerce.
2 Application Serial No. 75/094,455, filed April 26, 1996, based
on an asserted bona fide intention to use the mark in commerce.
Ser Nos. 75/094,455
75/094,456
2
Registration has been refused in both cases pursuant to
Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d), on the
ground that applicant’s marks so resemble the mark BLIZZARD
SOX (“Sox” disclaimed), previously registered for thermal
socks, that, if used on applicant’s identified goods, they
are likely to cause confusion or mistake or to deceive.
Applicant has appealed. Briefs have been filed by
applicant and the Examining Attorney, but an oral hearing
was not requested. Because both cases involve similar facts
and issues, we decide both appeals in this opinion.
Turning first to the goods, we note that the
identification, on its face, could indicate that applicant’s
fabric is sold to businesses which manufacture clothing.
However, the identification is broad enough to encompass
fabric which is sold at retail to ordinary consumers who
make their own clothing and, indeed, applicant has stated
that the consumers of its fabric “largely are individuals
who fashion articles of clothing at home.” Brief, p. 6.
Thus, in determining whether confusion is likely, we have
treated applicant’ goods as consumer products rather than
products sold to the trade.
Ser Nos. 75/094,455
75/094,456
3
We acknowledge applicant’s point that the applicant’s
and the registrant’s goods are different, applicant’s goods
being raw textile materials while the registrant’s are
finished goods. However, the question is not whether
consumers will confuse rolls of fabric with thermal socks,
but whether they will believe that they emanate from the
same source. It is well established that
it is not necessary that the goods of
the parties be similar or competitive,
or even that they move in the same
channels of trade to support a holding
of likelihood of confusion. It is
sufficient that the respective goods of
the parties are related in some manner,
and/or that the conditions and
activities surrounding the marketing of
the goods are such that they would or
could be encountered by the same persons
under circumstances that could, because
of the similarity of the marks, give
rise to the mistaken belief that they
originate from the same producer.
In re International Telephone & Telegraph Corp., 197 USPQ
910, 911 (TTAB 1978).
Thus, we must consider whether applicant’s textile
fabrics and the registrant’s thermal socks are sufficiently
related that consumers are likely to believe they would come
from the same source if they were sold under similar marks.
The Board has frequently held that confusion in trade
is likely to result from the contemporaneous use of the same
or similar marks on fabrics and items of apparel, where,
inter alia, “the garments are or could be made from the
Ser Nos. 75/094,455
75/094,456
4
piece goods.” See Warnaco Inc. v. Adventure Knits, Inc.,
210 USPQ 307, 315 (TTAB 1981), and cases cited therein.
Here, applicant has identified its goods as “textile
fabrics” without limitation as to type. Thus, these fabrics
must be presumed to include fabric which can be made into
thermal socks. Moreover, one of the applied-for marks is
BLIZZARD FLEECE. The word FLEECE has been disclaimed, thus
indicating that the fabric is fleece, which material can
certainly be used in thermal socks.
Applicant has not discussed the various cases cited by
the Examining Attorney which stand for the principle that
fabrics and clothing are related goods, and that the use of
the same or similar marks on them is likely to cause
confusion. Instead, applicant has relied on Oxford
Industries, Inc. v JBJ Fabrics, Inc., 6 USPQ2d 1756 (SDNY
1988), in which the Court found no trademark infringement,
in part due to the fact that the plaintiff’s garments were
sold to retail apparel outlets and to the ultimate apparel
consumer, while the defendant’s fabric was sold principally
to garment manufacturers who, in making the finished
garments, would remove the selvage portion of the fabric
which bore defendant’s mark, such that the purchasers of the
garments would never see the mark.
The facts of the present case clearly differ from those
in Oxford. As discussed above, not only is applicant’s
Ser Nos. 75/094,455
75/094,456
5
identification of goods broad enough to include sales of its
fabric to the general public, but applicant has acknowledged
that individuals who do their own sewing are the primary
customers of its fabric. Thus, both applicant’s fabric and
the registrant’s thermal socks would be sold to the same
class of consumers, and they are the general public, rather
than the sophisticated manufacturers who were the purchasers
of the defendant’s goods in the Oxford case.
We recognize that applicant’s fabric and the
registrant’s thermal socks would normally be sold in
different retail stores. However, the purchasers of both
products could be the same; a consumer might well go to a
fabric store to purchase, for example, fleece fabric to make
a warm vest, and go to a clothing store to purchase thermal
socks to be worn with that vest. We are not persuaded by
applicant’s argument that the consumers of fabric and the
consumers of thermal socks are different. The fact that
people may sew their own clothing out of purchased fabric
does not mean that they would never purchase finished
garments. Moreover, thermal socks are a specialized type of
clothing; applicant has provided no evidence that home
sewers would normally make thermal socks.
Accordingly, we find that applicant’s “textile fabrics
for use in the manufacture of clothing” to be related to
Ser Nos. 75/094,455
75/094,456
6
“thermal socks” such that, if the same or similar marks were
used on both, confusion is likely to result.
This brings us to a consideration of the marks.
Applicant has discussed in great detail the various
differences in the marks, and we acknowledge that the word
BLIZZARD in applicant’s marks appears in a slightly stylized
typestyle, with lines preceding the “B” which, when used in
connection with the word, suggest a blizzard wind or driven
snow. One of applicant’s marks also includes the generic
word FLEECE, while the cited mark includes the generic word
SOX.
These differences, however, are not sufficient to
distinguish applicant’s marks from the cited mark. The
dominant element of both applicant’s marks and the
registrant’s mark is the word BLIZZARD. Consumers are not
likely to note or remember the slight stylization of the
word BLIZZARD in applicant’s marks, or the lines design
element. Moreover, the cited mark is depicted as a typed
drawing, which means that the protection accorded to it
would encompass the typestyle in which BLIZZARD is shown in
applicant’s marks. As for the design element in applicant’s
marks, the lines merely reinforce the connotation of the
word BLIZZARD. More importantly, because applicant’s goods
would be referred to, respectively, as BLIZZARD and BLIZZARD
FLEECE, it is the words and not the typestyle or design
Ser Nos. 75/094,455
75/094,456
7
element that consumers will remember. Therefore, in the
context of the marketplace, where consumers would not have
an opportunity to compare applicant’s or the registrant’s
marks on a side-by-side basis because the goods would be
sold in different stores, the stylization and the design in
applicant’s marks are not sufficient to distinguish
applicant’s marks from the registrant’s. See Dassler KG v.
Roller Derby Skate Corp., 206 USPQ 255 (TTAB 1980).
With respect to the inclusion of the generic words SOX
in the cited mark, and the generic word FLEECE in one of
applicant’s marks, while consumers might well note that
these words are different in the different marks, they will
not ascribe these differences to a difference in source of
the goods. Rather, they will simply assume that a single
source has chosen to use its mark BLIZZARD with the generic
word SOX when the mark is used for thermal socks, and with
the generic word FLEECE when the mark is used for fabric.
Similarly, vis-à-vis BLIZZARD and design and BLIZZARD SOX,
consumers will assume that the fabric and thermal socks come
from the same source, and that source has simply added the
generic term SOX when the mark is used in connection with
thermal socks.
Although we have discussed the various elements that
comprise applicant’s and the registrant’s marks, we have, in
reaching our determination of likelihood of confusion,
Ser Nos. 75/094,455
75/094,456
8
compared the marks in the entireties. It is well
established that, in articulating reasons for reaching a
conclusion on the issue of likelihood of confusion, there is
nothing improper in stating that, for rational reasons, more
or less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
Applicant has also asserted that the cited mark is
weak, and is not entitled to a wide scope of protection. In
support of this position, applicant points to two third-
party registrations, both owned by the same registrant, for
BLIZZARD BOMBER and LIL’BLIZZARD BOMBER, both for hats.
These registrations had originally been cited against
applicant’s application, but were withdrawn as a result of
applicant’s response, in which applicant argued the
distinctiveness of BOMBER, the alliterative effect of the
words, and the likelihood that the marks would not be
shortened to BLIZZARD. For the reasons articulated by
applicant, we would agree that these marks convey a
different commercial impression from BLIZZARD SOX, and we
cannot find that the presence on the Register of only these
two registrations owned by a single third-party shows that
BLIZZARD SOX is not a strong mark.
Ser Nos. 75/094,455
75/094,456
9
We should note that, although applicant has not raised
this point, BLIZZARD has a suggestive significance when used
in connection with thermal socks. This does not mean,
however, that the cited mark is not entitled to protection
against applicant’s use of BLIZZARD and design or BLIZZARD
FLEECE and design for textile fabrics for use in the
manufacture of clothing, particularly since applicant’s
marks convey the same suggestive significance.
Finally, it is well established that, to the extent
that there is any doubt on the issue of likelihood of
confusion, such doubt must be resolved against the newcomer
and in favor of the prior user or registrant. In re
Pneumatiques, Caoutchouc Manufacture et Plastiques Kleber-
Colombes, 487 F.2d 918, 179 USPQ 729 (CCPA 1973). In this
case applicant, who filed its application based on an
intention to use the mark, rather than use, is clearly the
newcomer.
Ser Nos. 75/094,455
75/094,456
10
Decision: The refusal of registration with respect to
both applications is affirmed.
R. L. Simms
E. J. Seeherman
P. T. Hairston
Administrative Trademark Judges
Trademark Trial and Appeal Board